System and method for extracting value from a portfolio of assets

ABSTRACT

A system and methods for extracting value from a portfolio of assets, for example a patent portfolio, are described. By granting floating privileges described herein, a portfolio owner can extend an opportunity for obtaining an interest in selected assets from the portfolio to a client who lacks the resources to accumulate and maintain such a portfolio, in return for an annuity stream to the portfolio owner. The floating privilege can take many forms, depending on the needs of the client and the nature of the assets in the portfolio. The privilege is executed for a set of assets selected by the client and approved by the portfolio owner in accordance with a floating privilege agreement controlling the floating privilege

CROSS REFERENCE TO RELATED APPLICATIONS

This application is a continuation application of U.S. application Ser.No. 13/770,758, filed on Feb. 19, 2013, in the U.S. Patent and TrademarkOffice, which is a continuation application of U.S. application Ser. No.11/696,104, filed on Apr. 3, 2007, in the U.S. Patent and TrademarkOffice, now U.S. Pat. No. 8,386,350, issued on Oct. 18, 2007, whichclaims the benefit of U.S. Provisional Application No. 60/788,723, filedon Apr. 4, 2006, in the U.S. Patent and Trademark Office, thedisclosures of which are incorporated herein by reference.

FIELD OF THE INVENTION

The present invention relates to systems and methods for extractingvalue from a portfolio of assets.

BACKGROUND

A relatively small number of very large corporations have substantialasset portfolios, for example intellectual property portfolios. Thesecorporations invest considerable amounts of money to acquire andmaintain such large portfolios. In recent years, additional emphasis hasbeen placed on leveraging these large intellectual property portfoliosto achieve a greater return on the investment associated with theircreation and maintenance.

Conventional techniques for extracting value from a large intellectualproperty portfolio include patent licensing, as well as the outrightsale of a patent or set of patents. Patent licensing is frequently theresult of business negotiations between a patent owner and an allegedinfringer surrounding the infringing use of one or more patents.Licensing negotiations can be a slow and difficult process because ofthe adversarial nature of the negotiations, thereby gating the number ofsuccessful licensing negotiations in each year.

One method of establishing licensing agreements involves a search forinfringers, and approaching infringers to negotiate a licensingagreement. Proof packs may be generated to demonstrate the infringement.Additionally, the patent holding party may approach the infringer with aset of patents including the infringed patents plus other patentsrelating to the infringer's field of endeavor, for example five patents,and offering a license agreement for the set of patents. Even ifnegotiations of this kind are successful, they can be long and drawnout. If the negotiation process takes four to five years, for example,the return on investment may be substantially diminished.

Several types of interests in intellectual property can be transferredbetween parties. Taking a patent as an example, the entire right, titleand interest in the patent can be transferred between parties byassigning the rights in the patent. The party owning title in the patenthas the right to enforce the patent and typically has standing to suefor patent infringement in the federal courts. Alternatively, the patentowner can retain title in the patent yet grant some of the rights in thepatent to others by licensing those others. An exclusive license givesthe licensee exclusive rights in the patent. Such exclusive rights canbe limited to a geographic area or to a particular field of use. A partywill take an exclusive license to a patent to be the only one in thegeographic area or in the field of use, which are specified in thelicense, to use the patented technology. An exclusive license often hassufficient rights to enforce the patent. A non-exclusive license, on theother hand, gives the licensee only limited rights in the patent,generally, to use the patented technology along with other non-exclusivelicensees. Unlike an exclusive licensee, a non-exclusive license doesnot have standing to enforce the patent.

A patent, or sets of related patents, may be sold to an interested partyfor a one time revenue gain, in which the patent owner assigns thepatent to the interested party. Unlike the case where the patent ownerretains title to the patent and grants licenses to others, an outrightsale typically has the disadvantage of precluding further leveraging ofthe patent by licensing the patent. Assigning the rights in the patenttypically also precludes further use by the patent owner for defensivepurposes. Just because a set of patents is not in a company's businessinterest, does not mean that those patents will not prove valuable in afuture litigation initiated against the company.

SUMMARY

Illustrative, non-limiting embodiments of the present invention overcomethe above disadvantages and other disadvantages not described above.Also, the present invention is not required to overcome thedisadvantages described above, and an illustrative, non-limitingembodiment of the present invention may not overcome any of the problemsdescribed above.

A new paradigm for exploiting the inherent value within a large assetportfolio, such as a portfolio of intellectual property asserts (e.g.,patents, copyrights, trademarks and trade secrets) is described thatgoes beyond the normal licensing and sale activities known and practicedin the prior art. The general concept of extracting value from aportfolio of assets, for example patents, utilizing a floatingprivilege, for example a floating assignment privilege, is summarized bythe following step:

granting to a client for consideration by an asset portfolio owner afloating privilege to a dynamic set of assets, such as a set of patents,wherein the floating privilege is a right to obtain an interest in oneor more of the assets in the dynamic set upon the occurrence of apredetermined event.

Note that the right, or option, is not for any specific asset, since theset of assets is considered to be dynamic following the establishment ofa floating privilege. The set or pool of assets is dynamic because noparticular asset is guaranteed to exist at a later time. The right toobtain an interest in one or more of the assets is a privilege that isnot tied to any particular asset in the pool of assets, but ratherfloats over the assets so that it can be applied to any of the assets inthe pool. When the privilege is executed, an interest is obtained to oneor more assets selected from the presently available assets within thedynamic set of assets at the time the privilege is executed. Byagreement, while the set of assets covered by the floating privilege isdynamic, the number of assets in the set is typically constrained insome way to ensure continuing value to the client.

An example of such a predetermined event can be the initiation of apatent infringement lawsuit by a third party against the client. Theclient can then use the floating privilege to select one or more patentsfrom among the set of assets associated with the privilege to assertagainst the third party. Executing the privilege can include grantingsufficient rights in the selected patents to give the client standing tosue the third party for infringement of those patents. For example theclient can be granted an exclusive license in the patents or theselected patents can be assigned to the client. A predetermined event,as used within the context of this specification for the purpose ofexecuting a floating privilege, may be referred to herein as a “triggerevent”.

BRIEF DESCRIPTION OF THE DRAWINGS

The aspects of the present invention will become more apparent bydescribing in detail illustrative, non-limiting embodiments thereof withreference to the accompanying drawings, in which like reference numeralsrefer to like elements in the drawings.

FIG. 1 is a conceptual diagram representing a portfolio owner's, such asa corporation's, portfolio of assets and those assets within theportfolio that have been designated as a dynamic asset pool for aplurality of clients having a floating privilege to obtain an interestin one or more of the assets in the pool.

FIG. 2 is a conceptual diagram representing the corporation's portfolioof assets, a dynamic asset pool in which a plurality of clients have afloating privilege to obtain an interest in one or more of the assets inthe first dynamic asset pool and a custom dynamic asset pool thatincludes assets for a single client with a floating privilege for thecustom asset pool.

FIG. 3 is a conceptual diagram representing the corporation's portfolioof assets and a dynamic asset pool and a custom asset pool that bothinclude some of the same assets.

FIG. 4 is a flowchart illustrating a method for creating a dynamic assetpool.

FIG. 5 is a flowchart illustrating a method for creating a floatingprivilege.

FIG. 6 is a flowchart illustrating a method for processing a dynamicasset pool event.

FIG. 7 is a flowchart illustrating a method for processing a floatingprivilege event.

FIG. 8 is block diagram showing a system for creating and maintaining adynamic portfolio of assets, and processing a floating privilege event.

FIG. 9 is a conceptual diagram representing the corporation's portfolioof assets and a plurality of dynamic asset pools in which the assets arepatents.

DETAILED DESCRIPTION

The techniques disclosed herein are directed to a new system and methodfor extracting value from a portfolio of assets. The novel processescomprising this model will have greater appeal to prospective clients inthe business world, as well as the potential to extract a greater returnon investment from a large portfolio of assets. Examples of these assetsinclude, but are not limited to, patents, copyrights, trademarks, tradesecrets, real property, event tickets and travel tickets. To simplifythe description hereinafter all types of assets are referred to hereinas simply assets.

This new paradigm encompasses the creation of a dynamic pool of assetsto which a “floating privilege” is offered in return for an annuityrevenue stream, or other valuable consideration, to the asset poolowner. In accordance with the terms of a contract that runs with thefloating privilege, upon the occurrence of a predetermined event(hereinafter, a “trigger event”), the privilege is activated. The rightsassociated with this floating privilege include the selection of a setof a predetermined number of assets and transfer of certain legalinterests in those assets.

The pool of assets to which a “floating privilege” may be offered isdynamic in nature. That is, in accordance with the teachings presentedinfra, the set of specific assets in a pool may change over timefollowing the creation of one or more floating privileges linked to thepool without violating the floating privilege agreement. Thus, aprivilege, or right, to any specific asset is typically not guaranteedin a floating privilege agreement. Accordingly, the terms “asset pool”,“pool”, “pool of assets” and “dynamic asset pool” are hereinafter deemedequivalent in their intended meanings as used within the presentapplication, and anticipate a dynamic nature with respect to thespecific assets residing within the pool.

Asset Pool and Floating Privilege

The asset pool and floating privilege concepts are illustrated withseveral non-limiting embodiments shown in FIGS. 1 through 3.

FIG. 1 is a conceptual diagram showing an example of one embodiment ofan entity's portfolio of assets 100 and how it is grouped into assetsthat can be subject to a floating privilege and those that the entitydoes not make available to others. The portfolio of assets 100represents the total set of assets the entity owns that could be subjectto transfer to another. In the example of FIG. 1, the entity, alsoreferred to as the asset portfolio owner, or portfolio owner, is acorporation and assets are intellectual property assets and patents inparticular. It will be understood that the assets are not limited topatent or intellectual property assets, but can be other types of assetsin which rights can be transferred to others.

The portfolio owner might own hundreds or even thousands of patents (P).In this example, the corporation owns “n” patents, where n is a positiveinteger. The corporation, in this example, has designated “m” of itspatents P1 to Pm as eligible for selection for transfer to the holdersof a floating privilege upon the occurrence of a predetermined event,thereby forming a floating privilege pool 101, where m is a positiveinteger less than n. This floating privilege pool is also referred to asa dynamic asset pool, or more simply a “pool”. In this example, three ofthe corporation's clients, A, B and C, each have purchased a floatingprivilege for the assets in the floating privilege pool 101. Thecorporation's remaining patents 102, Pm+1 to Pn, are not included in thefloating privilege pool, but rather are held by the corporation for itsown exclusive use. Although patents P1 to Pm are shown in the floatingprivilege pool in FIG. 1, the specific patents in the pool may changedue to the dynamic nature of the pool.

FIG. 2 shows another embodiment of the portfolio owner's portfolio ofassets 100 divided into a floating privilege pool 101 containing patentsP1 to Pm and also containing a custom floating privilege pool 203. Thecustom floating privilege pool 203 contains patents Pm+1 to Pp, where pis a positive integer greater than m and less than n. In this embodimentclient D has contracted with the corporation to have a floatingprivilege to the custom floating privilege pool 203. Custom pool 203 isa dynamic asset pool in that the patents within the pool can change overtime. Alternatively, client D can agree with the corporation to limitthe changes to the custom pool 203. For example, the contract betweenthe corporation and client D can specify that the certain patents remainin the custom pool 203 while others may change.

FIG. 3 shows another embodiment of the portfolio owner's portfolio ofassets 100 also divided into a floating privilege pool 101 containingpatents P1 to Pm and containing a custom floating privilege pool 303.The remaining patents 202 in the portfolio consist of patents Pp+1 toPn.

However, in the embodiment shown in FIG. 3, the custom floatingprivilege pool 303 contains patents that also are included in thefloating privilege pool 101. Accordingly, the custom floating privilegepool 303 contains patents Pm-q to Pp, where q is a positive integer lessthan m and p is greater than m and less than n. Patents Pm-q to Pm (304)are common to both the floating privilege pool 101 and the customfloating privilege pool 303 since they are contained in both pools.Accordingly, clients A, B, C and D each have a floating privilege forthe common assets 304 in the two pools.

FIGS. 1-3 are intentionally simple in their structure so as not tounnecessarily obfuscate the principles of the present invention and tofurther facilitate a complete understanding. However, it is anticipatedthat real world applications of the present teachings would involvehaving multiple clients with floating privileges to any given dynamicasset pool created for that purpose. Indeed, the client list could bedozens, hundreds, or even a thousand or more.

Furthermore, it is anticipated in real world applications that thenumber of assets in a pool subject to a floating privilege, althoughvariable as discussed in greater detail infra, at any given point intime would number, typically, into the hundreds or thousands.

By employing the techniques described here, a client corporation thatlacks a large asset portfolio can have access to a large corporation'smassive asset portfolio in a time of need. The client corporation'srights to these assets could be publicized so that anyone consideringsuing the client would have to consider all of the assets at theclient's disposal. In this way, a floating privilege to a dynamic assetpool provides both a deterrent value and an enhanced ability for theclient corporation to fend off such lawsuits.

FIGS. 4 through 7 are flowcharts showing non-limiting embodiments forcreating a dynamic asset pool, creating a floating privilege, processinga dynamic asset pool event, and processing a floating privilege event.It will be understood that these flowcharts illustrate example processesand other processes can be used to practice the invention.

Creating a Dynamic Asset Pool

FIG. 4 shows an example of a process for creating a dynamic asset pool.The process for creating a dynamic asset pool is started 400 and aminimum quantity of assets is established in a dynamic asset pool 401.In the example shown in FIGS. 1, the portfolio owner, a corporation,establishes a minimum number of patents to populate the floatingprivilege pool 101. This minimum quantity of assets forms a basis for anagreement between the corporation and its clients as to the minimum sizeof the dynamic asset pool. Due to the dynamic nature of the asset pool,with the corporation adding and removing assets from the pool over time,the number of assets in the dynamic asset pool likely will vary. Thecorporation may specify in a contract with its clients that the dynamicasset pool will always have at least the minimum number of assets in thepool. For example, assuming that the corporation owns 10,000 patents, itmay decide to offer clients a floating privilege to 80% of those patentsor 8,000 patents. Accordingly, the company establishes the minimumquantity of patents for the dynamic asset pool at 8,000 patents. Theminimum quantity of assets can be established in a variety of ways. Forexample, the company can designate a specific number of its patents toinclude the dynamic asset pool. Alternatively, the company can designatea percentage of its total patents to include in the dynamic asset pool.It will be understood that other ways of establishing the minimumquantity of assets in the dynamic asset pool can be employed in step401.

Once the minimum quantity of assets is established, the dynamic assetpool is populated by evaluating the corporation's assets and selectingthose assets that are suitable for inclusion in the dynamic asset pool.In step 402 a candidate asset is selected from the portfolio of assetsto evaluate for inclusion in the dynamic asset pool.

In step 403 the selected asset is evaluated against certain criteria fordetermining whether the asset is suitable for inclusion in the dynamicasset pool. An example of criteria a selected asset can be evaluatedagainst is a relevancy rating that can be specified for the asset. Instep 404 it is determined whether the selected asset is suitable forinclusion in the dynamic asset pool based on the results of theevaluation. If the asset is determined to be suitable, it is added tothe dynamic asset pool in step 405. The process then proceeds to step406. If the asset is determined not to be suitable, the asset is notadded to the dynamic asset pool and the process proceeds to step 406.For example, a strong patent relating to a core technology of acompany's strategic product line may be deemed unsuitable for a highrelevancy rating. Likewise, a patent claiming an invention not presentlyembodying a company's product line may represent an asset deemedsuitable for inclusion having a very low relevancy rating.

In step 406 the process determines whether the dynamic asset poolcontains at least the minimum quantity of assets established in step401. The process compares the number of assets in the pool against theminimum quantity of assets established in step 401. If the number ofassets in the pool is less than the established minimum number ofassets, the process flow returns to step 402 in which another candidateasset is selected from the portfolio of assets for evaluation.Alternatively, if the asset pool does not include at least theestablished minimum number of assets, the process flow can return tostep 401 in which the corporation can establish a new minimum number ofassets for the dynamic asset pool.

If in step 406 it is determined that the number of assets in the pool isgreater than or equal to the established minimum number of assets, theprocess proceeds to step 407. Step 407 is an optional step if thecorporation wants to add a buffer of additional assets to the dynamicasset pool over the minimum quantity of assets established in step 401.By adding a buffer of additional assets to the dynamic asset pool,assets can be removed from the pool without the number of assets in thepool dropping below the minimum number of assets clients expect the poolto contain. If the corporation establishes a buffer for the dynamicasset pool, and the number of assets in the pool does not equal orexceed the buffer's capacity, the process flow returns to step 402 toselect another candidate asset to add to the dynamic asset pool. If thedynamic asset pool either does not have a buffer established for thepool or if the number of assets in the pool equals or exceeds the sizeof the buffer, the dynamic asset pool creation process ends at step 408.

Creating a Floating Privilege

FIG. 5 is a flowchart illustrating a method of creating a floatingprivilege for use by a client to obtain an interest in one of more ofthe assets in one or more dynamic asset pools upon the occurrence of apredetermined triggering event. An example of such a triggering event isthe client being sued for patent infringement. The process of creating afloating privilege starts at step 500. Once the process starts, theportfolio owner, in step 501, assigns one or more dynamic asset pools tobe associated with a floating privilege. In one embodiment the privilegecan be represented by a data structure recorded in a computer readablemedium. In another embodiment, the floating privilege is recorded in awritten document. In still another embodiment the floating privilege isrepresented both by a data structure recorded in a computer readablemedium and is recorded in a written document. The process flow continueswith step 502.

In step 502 the asset portfolio owner specifies a guarantee as to thenumber of assets that will be present in the dynamic asset pool at anytime after the privilege is granted. This can be specified as a minimumnumber of assets that the portfolio owner guarantees will be present inthe dynamic asset pool. In one embodiment this guaranteed number ofassets is associated with the privilege by indicating the guaranteednumber of assets in the privilege data structure. In another embodimentthe guaranteed number of assets is specified in the written document inwhich the privilege is recorded. The process flow continues with step503.

In step 503 the asset portfolio owner specifies other dynamic asset poolcharacteristics. One example of such characteristics is the types ofassets included in the pool. In the embodiment shown in FIG. 1, forexample, the type of asset may be a software patent or a hardwarepatent; or a patent within a particular technology area, such as speechrecognition. The assets can be comprised of other types of intellectualproperty assets, such as copyrights and trade secrets. In one embodimentthese other characteristics are associated with the privilege byindicating those characteristics in the privilege data structure. Inanother embodiment those characteristics are specified in the writtendocument in which the privilege is recorded. The process flow continueswith step 504.

In step 504 the asset portfolio owner specifies when the floatingprivilege expires. In one embodiment the asset portfolio ownerestablishes an expiration date that specifies when the floatingprivilege expires. In another embodiment the asset portfolio ownerspecifies an expiration event or series of events that cause thefloating privilege to expire. In one embodiment these expiration datesand/or events are associated with the privilege by indicating thosedates and/or events in the privilege data structure. In anotherembodiment those dates and/or events are specified in the writtendocument in which the privilege is recorded. The process flow continueswith step 505.

In step 505 the asset portfolio owner specifies the consideration aclient provides in return for receiving the floating privilege. In oneembodiment the asset portfolio owner specifies an annuity payment theclient will provide in return for receiving the floating privilege. Inone embodiment details about the consideration are associated with theprivilege by recording the consideration details in the privilege datastructure or providing a reference in the privilege data structure to alocation in a computer readable storage medium where those considerationdetails are recorded. In another embodiment those consideration detailsare specified in the written document in which the privilege isrecorded. The process flow continues with step 506.

In step 506 the asset portfolio owner specifies attributes of aqualifying event, or trigger event, in which the trigger event is anevent that triggers activation of a client's floating privilege. Byactivating the client's floating privilege the client, according to anagreement with the portfolio owner, may select one or more of the assetsin the dynamic asset pool for transfer to the client for the client'suse. One example of a trigger event is a litigation event concerning theclient. For example, the portfolio owner can specify that the filing ofa complaint alleging that the client infringes another's patent is atrigger event. Another example of a trigger event is a request by theclient to obtain an interest in an asset in the dynamic pool of assets.In one embodiment details about the trigger event are associated withthe privilege by recording details about the trigger event in theprivilege data structure or providing a reference in the privilege datastructure to a location in a computer readable storage medium wherethose trigger event details are recorded. In another embodiment thetrigger event details are specified in the written document in which theprivilege is recorded. The process flow continues with step 507.

In step 507 the asset portfolio owner specifies any other rights andobligations governing the floating privilege. For example, such otherrights and obligations can include the type of interest a client will begiven in an asset upon the occurrence of a trigger event. For example,the asset portfolio owner can specify that the rights in the asset willbe assigned to the client upon the occurrence of a trigger event.Alternatively, the asset portfolio owner can specify that the clientwill receive an exclusive license for the asset in response to theoccurrence of a trigger event. Yet another right that can be specifiedis a right of reversion for an asset in which the rights granted to theclient revert back to the asset portfolio owner in response tosatisfaction of a condition. The asset portfolio owner also can specifyvarious obligations associated with the privilege. In certainembodiments the asset portfolio owner specifies these other rights andobligations on an asset by asset basis. In one embodiment details aboutthese other rights and obligations are associated with the privilege byrecording details about those rights and obligations in the privilegedata structure or providing a reference in the privilege data structureto a location in a computer readable storage medium where those detailsare recorded. In another embodiment those details concerning the otherrights and obligations are specified in the written document in whichthe privilege is recorded. The process flow then ends with step 508.

Processing a Dynamic Asset Pool Event

FIG. 6 is a flowchart illustrating a method for processing a dynamicasset pool event. A dynamic assert pool event is either an eventconcerning maintaining or changing the asserts within a dynamic assetpool, as discussed above, or a floating privilege event, such as anevent that triggers activation of a floating privilege for the pool Asdiscussed above, an example of such a triggering event is the clientbeing sued for patent infringement. Processing of a floating privilegeevent is described in greater detail below. Processing a dynamic assetevent starts at step 600. Once the process starts, it is determined instep 601 whether an asset pool event occurs. Such asset pool events areconcerned with maintaining the dynamic asset pool. Examples of assetpool events include removing an asset if the asset has expired, if theasset is deemed to no longer be suitable for inclusion in the dynamicasset pool, and if the portfolio owner needs the asset for the owner'sexclusive use. If an event is determined not to be an asset pool eventin step 601 the process flows to step 602 where the process waits forthe occurrence of a next event. Upon the occurrence of the next eventthe process returns to step 601 to determine if the event is a dynamicasset pool event. If the event determined in step 601 to be an assetpool event, the process flow continues to step 603.

In step 603 it is determined whether the asset to which the asset poolevent relates has expired. This step can be performed by examiningexpiration information, such as an expiration date and/or time,associated with the asset. If the asset has expired, the process flowsto step 604 where the asset is removed from the dynamic asset pool.Next, in step 605, the pool is backfilled from available assets in theportfolio of assets by inserting an asset from the portfolio into thedynamic pool of assets to replace the removed asset. The process thenflows back to step 602 to wait for the next event.

If in step 603 it is determined that the asset has not expired, theprocess flows to step 606 where it is determined whether the asset is nolonger suitable for inclusion in the dynamic asset pool. For example,due to an acquisition or merger a previously non-strategic asset maybecome strategic. If the asset is determined to no longer be suitablefor the pool, the asset is removed from the pool in step 604. If,however, the asset is determined still to be suitable for inclusion inthe pool, the process flow continues to step 607.

If in step 607 it is determined that the portfolio owner needs to usethe asset, then the process flows to step 604 where the asset is removedfrom the pool. If, however, it is determined that the portfolio ownerdoes not need to use the asset, the process flow continues to step 608.

In step 608 it is determined whether the event is a floating privilegeevent, such as an event that triggers activation of a client's floatingprivilege. If the event is not a floating privilege event the processflows back to step 602 to wait for the next event to occur. If, however,the event is determined to be a floating privilege event, process flowsto step 609 which is described in more detail in FIG. 7.

Floating Privilege Event

FIG. 7 is a flowchart illustrating a method for processing a floatingprivilege event and shows step 609 of FIG. 6 in detail. The processstarts at step 700 which continues the flow from step 608 in FIG. 6 upondetermining that an event is a floating privilege event. In step 701 theprocess can check again to confirm that the event is a floatingprivilege event. If in step 701 it is determined that the event is not afloating privilege event, the process flows to step 702 which ends thefloating privilege event processing. If, however, it is determined instep 701 that the event is a floating privilege event, then the processflows to step 703.

In step 703 the event is evaluated. In step 704, based on the evaluationof the event, it is determined whether the event qualifies foractivating a client's floating privilege for a pool of assets. Todetermine whether an event qualifies as an event that triggers aclient's floating privilege, information associated with the client'sfloating privilege, such as the attributes of a trigger event that areassociated with the floating privileged can be inspected and comparedwith attributes of the floating privilege event under consideration. Ifattributes of the floating privilege event match the attributes of atrigger event associated with the client's floating privilege, then thefloating privilege event is deemed to be a trigger event. The processthen flows to step 705. If, however, the attributes of the floatingprivilege event do not match the attributes of a trigger eventassociated with the client's floating privilege, then the floatingprivilege event is deemed to be a non-qualifying event. In this case theprocess flows to step 702 where the floating privilege event processingends.

In step 705 since the floating privilege event is determined to be atrigger event, the client's floating privilege is activated.Accordingly, the client may select one or more assets from the dynamicasset pool to which the floating privilege applies. Upon the clientselecting an asset from the dynamic asset pool, step 706 determines ifthe selected asset is a qualified asset. A qualified asset is an assetin a dynamic asset pool that is deemed appropriate to transfer to aclient in response to the occurrence of the specific trigger event.Typically the portfolio owner will verify that the asset the clientselects from the pool is appropriate for a given qualifying ortriggering event. For example, if the triggering event is a third partyfiling a patent infringement lawsuit against the client, an appropriateasset to select from the pool could be a patent that could be assertedagainst the third party in a counterclaim. Step 706 provides a check onthe client to ensure that the client obtains from the pool only assetsthat are appropriate to the triggering event.

If the selected asset is deemed to be a non-qualifying asset, based onthe trigger event, the process flows to step 707 in which it isdetermined whether the pool contains additional assets for the client toconsider selecting. If there the pool contains such additional assetsthe process flows back to step 705 where the client selects anotherasset from the pool. If, however, there are no more assets in the poolfrom which the client may select, the process flows to step 702 wherethe floating privilege event processing ends.

If, however the selected asset is deemed to be a qualified asset, basedon the trigger event, the process flows to step 708. In step 708 thequalified asset is removed from the pool. In step 709 the qualifiedasset which has been removed from the dynamic asset pool is transferredto the client. Specifically, the rights in the qualified asset to betransferred to the client are determined based on the types of intereststo be transferred specified for the floating privilege. For example, ifthe floating privilege specifies that an assignment of rights in aqualifying assert is to be given to the client, then in step 709 therights in the asset are assigned to the client. Further, if the floatingprivilege indicates other conditions or limitations on the transfer,those conditions and limitations are imposed on the transfer in step709. For example, if the floating privilege indicates that any transferof the asset will include a conditional right of reversion, such aconditional right of reversion will be included in the conditions of thetransfer of the asset. Once the transfer of rights in the asset iscompleted in step 709, the process flows to step 710.

In step 710 the dynamic asset pool is backfilled to replace the removedquailed asset with another asset from the portfolio of assets. If afterremoving the qualified asset from the dynamic asset pool, the poolcontains more than the minimum number of assets, the backfilling stepmay not be performed. Following the backfilling step, the process flowsto step 711.

Step 711 determines whether the client has reached an authorized limitof assets to be transferred to the client from the dynamic asset pool.The client's floating privilege may contain information specifying anauthorized maximum number of assets which the client may remove from thepool in response to the occurrence of a trigger event. If the client hasnot yet reached the authorized maximum limit of assets to remove, theprocess flows to step 707 which determines whether there are any moreassets in the pool for the client to consider selecting. If the clienthas reached the authorized maximum limit of assets to remove, based on alimit specified in the client's floating privilege, the process flows tostep 702 where the floating privilege event processing ends.

In one embodiment, one or more of the steps of the methods describedabove and depicted in FIGS. 4 through 7 is performed automatically by acomputer programmed with and executing program instructions containedwithin the computer software. The computer software is recorded on acomputer readable medium such as a magnetic memory, an optical disc, asemiconductor memory, or any other well known computer readable storagemedium.

In another embodiment, the methods described above and depicted in FIG.4 through FIG. 7 is a programmed method. The term programmed method, asused herein, is defined to mean one or more process steps that arepresently performed; or, one or more process steps that are enabled tobe performed in the future. Therefore, a programmed method may comprisepresently performed process steps. A programmed method may also compriseprocess steps that are enabled to be performed by computer instructionsincorporated into a computer-useable medium, the instructions capable ofperforming the process steps when executing on a computer. Further, aprogrammed method may also comprise process steps enabled to beperformed by a computer system programmed by software, hardware,firmware or any combination thereof to perform the process steps.Further still, a programmed method may comprise process steps enabled tobe performed by computer instructions transmitted over a propagationmedium, the instructions capable of performing the process steps whenexecuting on a computer.

In yet another embodiment the methods described above and depicted inFIG. 4 through FIG. 7 and not performed automatically, but rather areperformed manually.

The pool of assets to which the floating privilege is granted is notstatic. There are many reasons why an asset may be added to, or removedfrom, a pool following the establishment of one or more floatingprivileges associated with the pool. One reason is that an asset mayexpire. For example, a patent asset has a calendar expiration date thatwill force its expiration independently of how many floating agreementsmay be in effect for the one or more pools associated with the asset.When the expiration date for an asset arrives, the asset no longer hasvalue and therefore is either explicitly or implicitly removed from thepool. Another reason for removing an asset from a pool is that theowning entity of the pool of assets may find it beneficial to use theasset for its own use. In a dynamic business environment an event, suchas a litigation event involving the owning entity, may make use of aparticular asset within a pool highly desirable and, accordingly, theowners use of the asset may take priority, wherein it is removed fromthe pool reflecting the owner's exclusive use. Of course, the asset maybe returned to one or more pools when it is determined that the owner'suse of the asset is no longer required.

Additionally, in accordance with the potentially numerous floatingprivilege agreements in effect, qualified assets may be removed from apool of assets as trigger events trigger the privilege exercise for oneor more clients. These examples, and numerous other scenarios, make itadvantageous to facilitate asset turnover within a pool withoutdisrupting existing floating privileges to the pool, and without havinga detrimental effect on the further creation of additional floatingagreements to the pool.

Even though assets within a pool are potentially changing, the existingfloating privileges in place remain attractive, and the ability toattract new clients to consider a floating privilege to the pool isretained. This is because a client finds a floating privilege highlydesirable in that it is the shear size and function represented withinthe pool that enhance the odds of finding value in a time of need. Priorto the occurrence of a trigger event, it may be impossible to know whatspecific assets in a pool will be helpful in resolving the issuessurrounding the event advantageously. Therefore, knowing that specificassets are available is not as beneficial as knowing that certainquantities of certain types of assets are available from which to chooseto enhance the probability that something of value can be foundfollowing a trigger event. Typically, it is only following a triggerevent that enough information is available to facilitate the recognitionof what assets will be valuable to resolve the particular issue thatmotivated the trigger event. Large pools will provide confidence andcomfort to a client that helpful assets will likely be found in a timeof need.

While the number of assets removed from a pool due to interest transferto clients is anticipated to be low, the floating privilege agreementmust accommodate the dynamic nature of the pool contents. In oneembodiment, the content of the pool is variable, while the size of thepool in number of assets is constant. In another embodiment, the size ofthe pool in number of assets is equal to or larger than a minimumguaranteed size. In yet another embodiment the size of the pool innumber of assets can change according to a variable, for example, a sizethat cannot decrease by more than a certain percentage (e.g., 10%, etc.)

Floating Privilege System

Many of the processes described above may be implemented by a computersystem, such as the system 800 depicted in the block diagram of FIG. 8.In one embodiment, a first user-friendly graphical user interface 821(GUI) facilitates access for the portfolio owner over a network 820,such as the Internet, to a server 810, such as a secure web portalserver, where various transactions and operations related to a floatingprivilege may be performed. The server 810 either contains or is coupledto a searchable database 801. In one embodiment, server 810 functions asa privilege server.

The privilege server 810, in one embodiment, includes a pool creationmodule 811, an assert search module 812 that includes a set size module813 and a set criterion module 814. The privilege service also includesan execution module 815, a termination module 816 and a pool maintenancemodule 817. The modules within the privilege server 810 communicate withnetwork 820 by way of a network interface 818 and with the database 801by way of a database interface 819.

The database 801 contains indexed information describing the portfolioof assets. For example, the assets can be indexed within the database801 according to a variety of aspects. In one embodiment, an asset tableis used reflecting a portfolio of assets, as shown below in exemplaryTable 1. Each row in the asset table corresponds to an asset from aportfolio of assets. Each asset is assigned an asset identifier, e.g.“Asset_1,” “Asset_2,” etc. The state of at least one dynamic factor isindicated, and whether or not each asset has been incorporated into oneor more pools of assets offered to clients for the floating privilege.In one embodiment, pool creation is automatic and is determined by anevaluation of the information contained in Table 1, such as the state ofthe dynamic factor and/or other attribute or informational fields. Asillustrated in Table 1, each asset having a dynamic factor in the firststate (State_1) is eligible for selection into one or more pools, andeach asset having the dynamic factor in the second state (State_2) isnot eligible for selection into any pools. Therefore, in one embodiment,a pool is automatically created by scanning each row of Table 1 and, forentries in the first state, a further determination of suitability ismade based on other attributes and information in the row, such as atechnology name associated with an asset (e.g. search engines,semiconductors, network performance, etc). After a first pool isautomatically created, additional pools also may be automaticallycreated utilizing different criteria to be applied to rows in Table 1having the first state. In another embodiment, a pool identifier isassigned to each asset comprising the set of assets for a given pool(not shown in Table 1 which, for simplicity, is assuming the creation ofonly a single pool).

TABLE 1 Asset Dynamic Included in an Asset Interest in Asset IdentifierFactor Asset Pool? Attribute Given to Client? Asset_1 State_1 YesTrait_1 Yes Asset_2 State_2 No Trait_1 n/a Asset_3 State_2 No Trait_2n/a Asset_4 State_1 Yes Trait_1 Yes Asset_5 State_2 No Trait_2 n/aAsset_6 State_1 Yes Trait_1 Yes Asset_7 State_1 Yes Trait_2 n/a Asset_8State_1 Yes Trait_2 n/a Asset_9 State_2 No Trait_1 n/a Asset_10 State_2No Trait_2 n/a

Each asset, as indicated supra, may be described by one or moreattributes, e.g. “Trait_1” and “Trait_2.” In one embodiment, clients cansearch the database, upon the occurrence of a trigger event, for assetshaving attributes deemed desirable by the client and belonging to a poolin which they possess a floating privilege. As indicated in Table 1, ifan asset is not a part of a pool to which the client possesses afloating privilege, it is not relevant whether or not the assetpossesses the selection criteria desired by the client. However, shouldthe dynamic factor of an asset, e.g. Asset_2, change such that the assetis added to a pool for which the client has a floating privilege, thetest of whether or not the asset meets the selection criteria desired bythe client can be applied.

In one embodiment, once various assets are chosen for an initialinterest set, further detailed analysis is typically performed by theclient to ascertain with specificity whether or not a particular assetwill meet their needs. Thus, the initial interest list of assets isfurther pruned until the number of assets on the list is equal to orless than the number of assets the client is entitled to receive aninterest in accordance with the terms of the client's floating privilegeagreement. Then, a final selection of assets can be submitted to theasset owner for verification and processing. At the conclusion of allselection and verification processing a final set, hereinafter referredto as a “qualified” set, of assets is identified for which an interestis given to the client from the asset owner. In one embodiment, theverification process is deployed by the owner to ensure that therequested assets are indeed useful in addressing the issues associatedwith the trigger event, in accordance with the terms of the client'sfloating privilege agreement with the owning party.

The database 801, in one embodiment, also stores an indicator forwhether or not a privilege has been granted for each asset, the type offloating privilege granted, and the client receiving the privilege.Typically, once an interest to an asset is given to a client under theprovisions of their floating agreement, that asset is removed from allpools, reflecting its unavailability for further use by other clients.Other information about an asset can be recorded in the asset table.Also, the asset table can be embodied in a single table, a plurality ofrelated tables or even constructs other than tables.

Referring to the system 800 of FIG. 8, the privilege server 810 mayrepresent a central focal point where all floating privilegetransactions may be accommodated. For example, one useful serviceoffered by the privilege server 810 would be facilitating access to thedatabase 801 for the portfolio owner and one or more clients.

In one embodiment, the server 810 includes the pool creation module 811.The first GUI 821 enables the portfolio owner to use the pool creationmodule 811 to establish pools (e.g. 101 and 203 in FIG. 2) of assetseligible for the floating privilege. For example, the portfolio ownercould use the first GUI 821 to enter pool selection criteria. In oneembodiment, the first GUI 821 accesses the server 810 via network 820,such as the Internet.

A second user-friendly GUI 822 provides the client access, by way ofnetwork 820, to assets in the database 801, for example, the pool 101 ofassets. A client may use GUI 822 to discover potentially useful assetsavailable to receive an interest under the terms of their floatingprivilege. In one embodiment, the server 810 includes an asset searchmodule 812 accessible by the client through the second GUI 822 forsearching a set of assets from the one or more pools of assets to whichthe client has a floating privilege. For example, a third party maynotify a client of the client's alleged infringement of a patent thethird party owns. The client may perform research about the third partyto discover the various products offered by the third party and theassociated technology areas in which these products operate. Based uponthis knowledge, the client could use the second GUI 822 to enterrelevant selection criteria to view assets of potential value inaddressing the infringement issue. In one embodiment, the second GUI 822accesses the server 810 via the Internet 820. Assets and informationabout the assets, such as information held in the asset table, forexample, can be displayed by way of the GUI 821 or 822.

The server 810 also includes the execution module 815 for facilitatingexecution of the privilege upon the occurrence of a trigger event inaccordance with the terms of their floating privilege agreement.Typically, such execution assigns an interest to the client for at leastone of the assets within the one or more pools for which the clientpossesses a floating privilege. Typically, the client chooses (with theassistance of knowledge gained from system 800) specific assets (but notmore than the limit governed in the client's floating privilegeagreement) to which to obtain an interest in those assets under theterms and conditions of the governing floating privilege agreement. Inone embodiment, under the terms and conditions of the governing floatingprivilege, the pool owner has an opportunity to verify that therequested assets are appropriate in view of the trigger event. The poolowner can use the execution module 815 to verify or qualify that theselected assets are appropriate for the client to acquire based on thetrigger event. Ultimately, an agreed upon qualified set of clientselected assets (or asset) are specified for processing by executionmodule 815. As discussed supra, in one embodiment when an interest isgiven to a client the transaction is recorded in the database 801 withan indicator reflecting interest change for each asset processed by theexecution module 815. In one embodiment of the present invention, theserver 810 also includes the termination module 816 for terminating thefloating privilege to one or more pools upon an occurrence of apredetermined termination event (hereinafter, simply a “terminationevent”).

FIG. 9 is a conceptual diagram that is referenced in the followingdescriptions to facilitate understanding of the various embodimentsdescribed below. FIG. 9 shows a portfolio of assets 900, in this casepatents P1 to P15, owned by the portfolio owner, a corporation, in whichsome of the assets are allocated to two overlapping dynamic pools. Afirst dynamic pool of assets 901 contains numerous patents, representedby patents P1, P3, P7, P9 and P11 through P15. Three clients, A, B andC, each have a floating privilege for this first pool. A second dynamicpool of assets 903 includes patents P3, P7, P8 and P10, and two clientsC and D have a floating privilege to the assets in this second pool.Note that client C has two floating privileges, one to the first pooland one to the second pool. The two pools overlap in that they bothcontain two of the same patents: P3 and P7. These assets common to bothpools 904 are eligible for selection by any of clients A, B, C and D ifthe appropriate trigger events occur. The portfolio also contains assetsthat are part of neither pool 902, namely patents P2, P4, P5 and P6.FIG. 9 also shows three qualified assets 905 for client A, namely,patents P1, P3 and P9. This figure.

In one embodiment, the server 810 includes the pool maintenance module817 for removing assets from one or more pools as they become ineligiblefor the floating privilege for any of a variety of reasons, and addingassets to one or more pools for the purpose of backfilling for assetsremoved in accordance with any minimum asset requirements governed bythe floating agreement. In one embodiment, multiple clients may haveaccess to a given pool or given multiple pools, or there may be overlapbetween pools (904), as in FIG. 9. When a floating privilege isexercised for one or more assets (e.g. qualified assets 905, namely,patents P1, P3 and 9) for a client under the terms and conditions of agoverning floating privilege agreement, the pool maintenance module 817could carry out removing the one or more assets from any affected pools(a single pool or overlapping multiple pools where the asset to beremoved is common across the multiple pools). Maintenance module 817 mayalso backfill by adding additional assets to the pool or pools affectedby the floating privilege exercise in accordance with any minimum poolsize requirements specified in the governing floating privilegesassociated with the affected pool or pools.

For example, referring to FIG. 9, once the privilege is executed byClient A for the selected and qualified set of assets 905 (i.e., patentsP1, P3 and P9), the pool maintenance module 817 automatically removesassets 905 (i.e., patents P1, P3 and P9) from all affected pools, whichfor FIG. 9 is the first pool 901 and the second pool 903. In oneembodiment, discussed supra, the removal of an asset is facilitated bymarking the associated asset row for each removed asset in Table 1 asState_2, indicating that the asset is not eligible for inclusion withinany pool. Other updates optionally also may be made, reflecting morespecifically an interest given to a specific client. The functions ofthe pool creation module 811, the asset search module 812, the executionmodule 815, the termination module 816, the pool maintenance module 817,the network interface 818 and the database interface 819, can beimplemented using software instructions encoded on a computer readablemedium such as a magnetic medium (e.g., disc or tape), an optical medium(e.g., CD-R or other type of optical disc), a semiconductor memory, orany other tangible medium capable of storing software instructions.

In addition to the automated processes offered by the server 810, in oneembodiment, one or more pool managers are assigned to oversee alloperations related to the asset pool. This management process includessuch analysis as, for example, determining assets suitable for inclusionin the pool and verifying the legitimacy of requests for execution ofthe privilege under the terms and conditions of the floating privilegeagreement between the portfolio owning party and a client. System 800and the various GUI interfaces discussed supra may optionally beexpanded to facilitate the needs of human pool managers pertaining toextraction of appropriate information relevant to a particular task, aswell as incorporating learned information and decision points intodatabase 801.

The system 800 depicted in FIG. 8 further includes the pool maintenancemodule 817 for automatically removing an asset from the pool if thedynamic factor of that asset changes from the first state to the secondstate. In other words, if an asset becomes ineligible for the privilege,that asset is automatically removed from the affected pool or pools. Thepool maintenance module 817 then backfills the pool or pools asdiscussed supra. In one type of floating privilege agreement,backfilling is performed such that a constant number of assets in thepool is maintained. In another type of floating privilege agreement, aminimum quantity of assets is maintained, as controlled by the floatingprivilege agreement. The minimum quantity could be an absolute value ora value derived from a formula, such as a percentage of the originalpool size at the time of the floating privilege agreement, or any otheragreed upon method for determining the minimum size of the pool to bemaintained by the owning party.

The asset search module 812, in one embodiment, may be adapted toautomatically generate assets for which an interest is to be given to aclient under the terms and conditions of the governing floatingprivilege and in view of a particular trigger event. In this embodiment,asset search module within the server 810 includes the set-size module813 for selecting a total number of assets to which the client isentitled to request an interest in accordance with the governingfloating privilege agreement. The asset search module 812 also includesthe set-criterion module 814 for selecting at least one criterion foruse in selecting assets up to the limit as governed by set-size module813. In this way, upon an occurrence of a trigger event, the privilegeexecution may be automated for a set of assets that includes apredetermined number of assets, each asset in the set possessing thedesired criterion or criteria.

One embodiment of the present invention is directed to a new system andmethod for assigning and licensing patents. The novel processescomprising the present invention will have greater appeal to prospectiveclients in the business world, as well as the potential to extract agreater return on investment from a large patent portfolio. This newparadigm encompasses the creation of one or more pools of patents towhich a floating privilege is offered in return for an annuity revenuestream to the patent pool owner, or other agreed upon consideration. Inaccordance with the terms of a contract that runs with the floatingprivilege, upon the occurrence of a trigger event, the privilege isactivated. The rights associated with this floating privilege includethe selection of a predetermined number of patents in which the clientis to receive an interest. The number of patents and the type ofinterest to be governed by the floating privilege.

Operation of a Floating Privilege System

Before describing the details about how assets, such as patents, aretransferred, it is helpful to understand why an enterprise wouldperceive tremendous value in a floating privilege, as briefly describedabove. The answer lies in freedom of action for a business. The cost ofbuilding a substantial defensive patent portfolio is prohibitive formost small and midsized companies, typically requiring an investment ofhundreds of millions of dollars. Whether building a portfolio throughin-house invention, or through direct or indirect acquisition, the costof achieving critical mass for a defensive patent portfolio can beprohibitive for all but the largest companies. But what if theprotection of a large defensive patent portfolio was accessible in atime of need for a relatively modest cost? Just like purchasing a fireinsurance policy for a company's capital equipment—acquiring a floatingprivilege that provides freedom of action protection may be perceived asa prudent business decision.

Patents in the floating privilege patent pool can continue to beavailable for a patent pool owner's use should the owning company havedefensive needs that arise in the future. For example, a company with alarge patent portfolio may create a pool for use with a floatingprivilege comprising thousands of patents. Over time, many clients,perhaps thousands, may have obtained floating privilege agreements foruse with the pool. However, since interests in the assets are notobtained by clients until the privilege is enabled by the occurrence ofa trigger event, this large pool continues to be available to the poolowner. In this way, the owner continues to derive the benefit of a largedefensive portfolio, while receiving additional client revenue fromoffering floating privileges to the same pool. In a steady statecondition, this novel instrument may actually result in reducedlitigation and greater efficiency for the software industry as a whole.This, quite simply, is because a third party will be less likely toinitiate litigation against a client with the vast defensivecapabilities afforded by their floating privilege. While the annuitystream for any given floating privilege may be relatively modest, theaggregation of thousands of annuity streams accruing to the benefit offloating patent pool owner may be substantial.

A large pool of patents for defensive use may attract the interest oftens of thousands of small and midsized businesses. All can have afloating privilege to such a pool without risk of the pool significantlyweakening overtime due to assignments coming out of the pool as triggerevents occur. This is because of the significant deterrent value, asdiscussed supra, associated with a floating privilege to a largedefensive pool of patents. A third party considering litigation in manyinstances may choose not to litigate once they realize that the targetcompany has at their disposal five or ten thousand patents, for example,from which to pick and choose as fuel for a countersuit. Thus, thefloating privilege affords great value even in the absence of a triggerevent.

It is anticipated that patents of strong strategic interest to a companywith a large asset portfolio would not be made available to others inpatent pool(s) eligible for the floating privilege. Furthermore, it isanticipated that from time to time patents may be removed from the poolfor use by the owning company. For example, this usage includesdefensive purposes, as well as use for licensing negotiations whereinfringement by a third party of one or more patents in the floatingprivilege pool is detected by the owning company. Furthermore, a patentmay be removed for any other reason, including the changing of thepatent's status from non-strategic to strategic status.

A floating privilege acquired by a client is not open ended, buttypically expires on a predetermined date or termination event, or acombination thereof. In one embodiment, the occurrence of apredetermined date is a termination event. Typically, a floatingprivilege may be renewed an unlimited number of times to providecontinuing client service for an extended duration, in accordance withmutually agreed upon terms between the client and patent pool owner.

The trigger event that initiates the floating privilege is definedwithin the floating privilege agreement. In one embodiment, this triggerevent takes the form of a litigation action initiated against the clientby a third party. This litigation action likely will be the third partyeither sending a warning notification to the client that the clientinfringes a patent of the third party, or the third party filing acomplaint of patent infringement against the client. A litigation actionqualifying as a trigger event, however, is not limited to thesesituations, and can include other litigation actions such as the clientexpressing the desire to provoke an interference against a third partyby obtaining title to one or more patents in the pool.

Upon the occurrence of the trigger event, the client executes thefloating privilege for one or more of the patents in the pool or poolsassociated with the floating privilege (e.g. set 905 in FIG. 9,consisting of patents P1, P3 and P9). Exercising the floating privilege,enabled by the trigger event, transfers an interest in one or more poolassets to the client. The number of assets chosen by the client in whichto receive an interest (i.e. assets selected on the basis of havingpotential to assist in addressing the issue or issues surrounding thetrigger event) may not, in one embodiment, exceed the predeterminedasset limit specified in the floating privilege.

In one embodiment, the client uses system 800 to search for assets withparticular criteria as an aide in discerning the one or more assets inwhich to receive an interest. In another embodiment, the client mayutilize services provided by the pool owner or other parties to assistwith the selection process. In another embodiment, the floatingprivilege does not specify an upper limit on the number of assets thatmay be transferred but only specifies that a specific need arising outof the trigger event must be satisfied for each asset in which aninterest is to be received. For example, contractual language couldlimit the choice of patents to those deemed to have a defensive purposefor the litigation at hand. That is, in the absence of a useful patentavailable in the pool for a specific litigation need, the client may nottake advantage of the opportunity to acquire arbitrary intellectualproperty not relevant to the ongoing litigation.

The floating privilege agreement may include selecting multiple sets,each comprising one or more assets from one or multiple pools, such thateach set is tailored to a different trigger event. The number of patentsthat may be assigned for a given trigger event, in one embodiment, isset to a predetermined limit and specified in the floating privilegeagreement. In one embodiment, the predetermined limit is set to one. Inanother embodiment, the predetermined limit is set to two. In anotherembodiment, the predetermined limit is set to more than two patents. Inanother embodiment, the predetermined limit is variable depending uponspecific circumstances surrounding the trigger event. In still anotherembodiment, there is no specific predetermined limit, but rather thenumber of assets in which an interest is to be received is governed bymeeting a standard of appropriate usefulness of the asset to serve aparticular purpose as identified within the floating privilege.

A floating privilege may be terminated in any of numerous ways, asspecified within the floating privilege agreement. Exemplary terminationconditions include, but are not limited to, failure to make previouslyagreed to payments, the conclusion of a trigger event, the passing of aparticular date or period of time, failure to renew a renewable floatingprivilege agreement, sale or other demise of the client entity, etc.These, and other conditions agreed to by the client and pool owner fortermination, or any combination thereof, are hereinafter referred to asa termination event. Upon the occurrence of a termination event, in oneembodiment, interests in assets acquired under the floating privilegeare returned to the pool owner. In another embodiment, interests inassets acquired under the floating privilege survive the termination ofthe floating privilege and remain in the possession of the client. Instill another embodiment, disposition of the interest in assets iscontrolled by other conditions not relating to a termination event. Itis to be understood that a “predefined event” or, alternatively andequivalent in its intended meaning, a “predetermined event” within thecontext of this application does not typically mean previouslyidentifying an actual event that is pre-arranged to occur at a futuretime, but rather predefining or predetermining a type of event, such asa litigation event. Therefore, the “predetermining” or “predefining” istypically identifying a type, feature, class, characteristic, etc. suchthat a future actual event may fall into a specified “predetermined” or“predefined” event category by virtue of its type, feature, class,characteristic, etc.

Multiple Dynamic Asset Pools

A company with a very large number of patents eligible for a floatingprivilege exposure may wish to consider dividing the patents into two ormore pools. In one embodiment, a single patent may appear in more thanone patent pool. For example, multiple pools of patents eligible for afloating privilege may each target one or more predetermined technologyareas or, alternatively, the company may choose another selectioncriterion for placing a patent into one or more patent pools. In thisenvironment, a floating privilege could be directed to any one orcombination of existing patent pools of common ownership. In oneembodiment, different pricing structures are established for each of thevarious pools depending upon size of the pool and other characteristicsdeterministic of value.

In one embodiment, the resources of multiple portfolio owningenterprises are combined into one or more pools for the purpose ofestablishing floating privilege agreements. In this way, even more valuemay be presented for the client's consideration with a greater number ofassets in the one or more pools than would be otherwise possible fromjust a single enterprise. In this embodiment, client revenues are sharedbetween the owning enterprises in an agreed upon manner, and all pooltransactions, as discussed supra, may require the approval of all owningenterprises. In one embodiment, one of the enterprises, or a thirdparty, is designated to manage the one or more pools of combined assets.

Indexing Assets Within a Dynamic Asset Pool

Patents (or other forms of intellectual property assets) can be indexedwithin the database 801 according to a variety of aspects, as depictedin Table 2, below. Each row in Table 2 corresponds to a patent from aportfolio of assets. Each patent is assigned an asset identifier, e.g.“P1,” “P2,” etc. The state of at least one dynamic factor is stored foreach patent. Exemplary fields include the status of the patent andexpiration date, the level of value to the portfolio owner, and whetheror not each asset has been incorporated into one or more pools, such asthe first pool 901, or the second pool 903, or both the first and secondpools 901 and 903, from FIG. 9. In the example of Table 2, some patents(e.g. P1 in FIG. 9) are in the first pool 901 but not in the second pool903, while others (e.g. P8 in FIG. 9) are in the second pool 903 but notin the first pool 901. Further, some patents, (e.g. P7 in FIG. 9) are inboth the first and second pools. Still other patents (e.g. P2, P4, P5,P6) from the portfolio 900 are not presently eligible for either pool.However, should a dynamic factor of an asset change, e.g. if the levelof value to the owner for patent P5 changes from high to low, theportfolio owner may choose to incorporate patent P5 into one or morepools.

Each patent is described by at least one selection criteria, e.g. therepresentative arts the patent is concerned with. In Table 2, theclass(es) represented by each patent is identified. In one embodiment,clients can search the database for patents in a pool of eligible assetsfrom desired classes. In other embodiments, the database could store theentire abstract or a list of keywords pertaining to the patent, or otherforms of searchable selection criteria. The database 801 could store anindication of whether or not a given patent meets the selection criteriadesired by the client or clients. The database 801, in one embodiment,also stores an indicator for whether or not a privilege has been grantedfor each asset, as in Table 2, and the client receiving the privilege.

TABLE 2 Level of Client Asset Value to First Second RepresentativePrivilege receiving Identifier Status Owner Pool Pool arts Granted?privilege Patent 1 Issued Low Yes no Class 1, class 2 Yes Client A (P1)P2 Expired Low No No Class 3 No n/a P3 Issued Low Yes Yes Class 2, class3 Yes n/a P4 Abandoned n/a No No n/a No n/a P5 Issued High No No Class1, class 2 No n/a P6 Issued High No No Class 1, class 3 No n/a P7 Issuedlow Yes yes Class 2 No Client A P8 Issued low No yes Class 3 No n/a P9Issued low Yes no Class 1, class 2 Yes Client A P10 Issued low No yesClass 3 No n/a

Interests in Pool Assets

It is possible to consider many variations in the type of assignment tobe made under a floating privilege agreement. In one embodiment, theassignment is a simple assignment that transfers the entire right, titleand interest in a patent to the client, with no conditions on theassignment. In other embodiments various conditions can be imposed onthe third party with the assignment. For example, the patent owner canreserve a right of reversion that runs with the assignment whereupon thepatent is assigned back to the original patent owner upon concluding thelitigation matter that triggered the exercise of the floating privilege.In still another embodiment, the owner of a patent pool can retain anonexclusive license to the patent assigned to a client through thefloating privilege agreement..

Other conditions and rules associated with a floating privilege may beagreed upon between the pool owner and the client. The company grantingthe privilege may retain the right to prevent the client from executingthe privilege to obtain an interest in a patent if, for example, thetransfer of rights to the patent would harm the granting company due tothe circumstances surrounding the intended use. Other conditions can beagreed upon by the pool owner and the client. For example, a company maywish to restrict usage of an assigned patent, such as restricting theright to further sell the assigned patent to a third party, or furtherrestricting the right to use the patent offensively against anotherclient with an active floating privilege. A patent pool owner may extenda nonexclusive license to all patents in the patent pool for which theclient has obtained a floating privilege, thereby further reinforcingthe client's freedom of action position. All of these additionaldetails, and others reasonably inferred by the teachings herein areanticipated by this invention.

Use of Qualified Assets

A client company with a “floating privilege” to a large patent portfoliohas access to an impressive defensive arsenal that serves as a deterrentagainst unwanted litigation. The patent pool owner may choose tostrengthen the deterrent value of the floating privilege by recording,in a publicly viewable repository, the company names of those clients inpossession of floating privileges to one or more patent pools. Ofcourse, the client may also choose to make their floating privilegeknown to the public through any of a variety of means, at theirdiscretion.

An asset pool owner may optionally make available for additional feesvarious services relevant to a floating privilege. These services, forexample, may include patent selection assistance, due diligence studiesor the creation of proof packs for proving infringement of a patent. Anasset pool owner may also choose to advertise the availability offloating privilege opportunities, or enlist the services of a broker inexpanding the growth of clients utilizing the floating privilegeservice. This is not unlike an insurance broker offering variousinsurance policies underwritten by one or more insurers.

When the floating privilege is granted from a patent portfolio owner toa client for a set of qualified patents, in accordance with embodimentsof the present invention, rights in the qualified patents aretransferred from the patent portfolio owner to the client. In oneembodiment, this transfer of rights is accomplished by an assignment ofthe rights. In another embodiment, the transfer of rights isaccomplished by licensing the rights. When a floating privilege isterminated responsive to a terminating event, any rights transferredduring the life of the floating privilege agreement are subject topossible reversion back to the granting party. However, in oneembodiment, any rights that accrued during the life of the floatingagreement are retained by the receiving party, unaffected by thetermination of the floating privilege agreement.

One example of a dynamic factor exhibited by the patents in theportfolio is the status of the patent. In reference to Table 2, supra,the patent status may be “issued”, “expired” or abandoned. Patents thatare “issued” are eligible for further consideration with respect to poolcreation, whereas a patent status of “expired” or “abandoned” wouldpreclude further consideration for use in a pool. An expiration orabandonment of a patent is considered to be a “pool event” wherein theexpiring or abandoned asset must be removed from the one or more poolsin which the asset presently resides. In one embodiment, a pool eventinvolves evaluating whether backfilling into the one or more pools fromwhich the asset was removed must occur in accordance with minimum poolsize requirements specified within the floating privilege agreement. Ifbackfilling is required, Table 2, supra, may be utilized in findingother suitable assets in the portfolio eligible for placement into apool by querying relevant dynamic factors. In one embodiment, a dynamicfactor representing value to the portfolio owner is used in discerningeligibility for inclusion within a pool. Patents having a low level ofvalue to the portfolio owner are eligible for inclusion in a pool, whilepatents having a high level of value to the portfolio owner are noteligible for the privilege. As can be appreciated by one of ordinaryskill in the art of patent portfolio management, patents possess otherdynamic factors that may be utilized in performing the various processesencompassed by this invention.

The server described above could carry out actual patent assignmentprocessing with subsequent removal from the pool, as well as backfillingby adding additional patents to the pool to replace patents that wereremoved by assignment, expiration or strategy-related status change.Beyond the automated processes, the pool management process, describedabove, includes such analysis as, for example, determining patentssuitable for inclusion in the pool and verifying the legitimacy ofrequests for assignment under the terms and conditions of a floatingprivilege.

In one embodiment of the present invention, the pool is dynamic in thatpatents can be removed from the pool by the pool maintenance module forany of numerous reasons. Exemplary reasons include transferring aninterest in an asset to a client under the terms of a floating privilegeagreement. That is, the interest transferred to the client typicallyprecludes the use of the asset by other clients having a floatingprivilege to the pool and therefore the asset is removed from the poolas a means of enforcing its unavailability. Furthermore, assets within apool may expire or become abandoned. Further still, assets may becomeineligible for the floating privilege due to the higher priority needsof the portfolio owner. As assets are removed from a pool, backfillingwith other eligible assets from a portfolio may occur in maintainingminimum pool size requirements in accordance with a governing floatingprivilege agreement.

In one embodiment, the execution of the floating privilege includesassigning qualified patents in the pool from a portfolio owner to aclient upon the occurrence of a trigger event. The process by whichpatents become qualified is governed by the applicable floatingprivilege agreement. Upon the occurrence of a termination event, asdefined by the applicable floating privilege agreement, all rights andprivileges under the floating agreement are revoked. The applicablefloating privilege agreement may further specify other terms andconditions to be met in addition to the discontinuance of the rights andprivileges established by the agreement. For example, the applicablefloating privilege agreement may further address processes pertaining tothe final disposition of assets accrued during the life of the floatingagreement. In one embodiment, a terminated floating privilege may berenewed under the currently prevailing terms and conditions or asfurther negotiated between the parties.

It will be understood that many variations and alternative embodimentsare encompassed by the present invention. For example, the followingfeatures can be present in one or more embodiments.

A floating privilege agreement might specify that a client must providesome type of consideration, such as paying certain fees, either toexercise the privilege or to acquire an asset upon exercising theprivilege, or both. The fee can be a one time fee on an on-going fee.Also, consideration other than monetary fees can be required of theclient to exercise the privilege or acquire an interest in the asset.

A client might obtain a floating privilege primarily because ofparticular assets in a portfolio owner's pool of assets. In this case,the client wants assurances that the particular assets of interest arealways present whenever the client might want to exercise the privilege.Accordingly, in certain embodiments assets can be “frozen” in thedynamic pool of assets such that the portfolio owner guarantees theclient that such assets will be available to the client from the poolwhenever the client exercises the privilege. In this regard, informationconcerning the asset includes an indicator of whether the asset is in afrozen or unfrozen state. The client may be required to pay a premiumfor a privilege to acquire such frozen assets. In one embodiment theportfolio owner may not remove a frozen asset from a pool. To supportsuch a requirement the systems responsible for maintaining the portfolioowner's dynamic pools of assets determine when an asset pool eventoccurs, such as adding or removing an assert from the pool. Upondetermining that an asset pool event has occurred, such as the portfolioowner attempting to remove an asset from the pool for the portfolioowner's benefit, the asset to be removed is evaluated to determinewhether it is in the frozen state. This can be accomplished byinspecting the indicator within the information about the asset thatindicates whether the asset is in a frozen or unfrozen state. If theasset is determined to be in a frozen state the asset is prevented frombeing removed from the dynamic pool of assets. If the indicatorindicates that the asset is in an unfrozen state the asset is removedfrom the dynamic pool of assets. If the asset is removed, another assetwithin the portfolio can be added to the dynamic pool of assets to meetany minimum requirements for the pool.

In another embodiment, a floating privilege agreement can specify that adynamic pool of assets will contain various types of assets. Certainminimum requirements for these various types of assets can be specifiedin the floating privilege agreement. Accordingly, when backfillingassets to replace removed assets, these minimum requirements for varioustypes of assets are taken into account when selecting assets forbackfilling into a dynamic pool of assets.

In summary, a floating privilege is a highly valuable asset, providingample business justification for a client company to purchase thisprotection. In addition, the highly recognizable value of a floatingprivilege may incent an alleged infringer of a patent(s) to promptlyenter into a licensing agreement with the patent pool owner with thefloating privilege offer used as added incentive for reaching anamicable agreement pertaining to the infringement. Thus, the floatingprivilege instrument may be used in a variety of ways to enhance therevenue and profits generated from a large patent portfolio.

Having described methods, apparatuses and articles of manufacture forextracting value from a large portfolio of assets, it is believed thatother modifications, variations and changes will be suggested to thoseskilled in the art in view of the teachings set forth herein. It istherefore to be understood that all such variations, modifications andchanges are believed to fall within the scope of the present invention.Although specific terms are employed herein, they are used in theirordinary and accustomed manner only, unless expressly defineddifferently herein, and not for purposes of limitation.

1. A computer program product comprising a permanent and durable computer useable medium having a computer readable program, wherein the computer readable program when executed on a computer causes the computer to execute a method for extracting value from a portfolio of assets, the method comprising: granting a privilege to a second party by a first party at time t1, wherein exercise of the privilege is conditioned upon an occurrence of a predetermined event occurring at time t2 where t2>t1, wherein the privilege comprises a right to obtain an interest in one or more assets residing in a dynamic pool of assets comprised of assets from the portfolio of assets at time t2, wherein the assets residing in the dynamic pool of assets at time t2 may be different from the assets residing in the dynamic pool of assets at time t1, and wherein a computer stores information concerning the dynamic pool of assets in a computer readable memory.
 2. The computer-program product of claim 1, wherein the privilege is defined in a floating privilege agreement between the first and second parties, the floating privilege agreement having a term and specifying the predetermined event and the type of interest to be conveyed to the second party upon execution of the privilege.
 3. The computer-program product of claim 2, wherein a number of assets in which the second party receives an interest is limited based on the floating privilege agreement.
 4. The computer-program product of claim 2, wherein the assets are intellectual property assets.
 5. The computer-program product of claim 4, wherein the privilege is exercised by the first party transferring rights in one or more of the assets in the dynamic pool of assets to the second party.
 6. The computer-program product of claim 4, wherein an occurrence of the predetermined event is a trigger event defined in the floating privilege agreement.
 7. The computer-program product of claim 6, wherein exercising the privilege comprises the second party selecting an asset from the dynamic pool of assets in response to occurrence of the trigger event.
 8. The computer-program product of claim 7, wherein exercising the privilege further comprises the first party qualifying the selected asset for transfer to the second party to ensure the selected asset is appropriate for use by the second party for the trigger event, and if the first party qualifies the selected asset for transfer the first party transfers rights in the selected asset to the second party.
 9. The computer-program product of claim 4, further comprising removing an asset from the dynamic pool of assets during the term of the floating privilege agreement for use by the first party.
 10. The computer-program product of claim 4, further comprising removing an asset from the dynamic pool of assets during the term of the floating privilege agreement in response to expiration of the first party's rights in the asset.
 11. The computer-program product of claim 4, further comprising removing an asset from the dynamic pool of assets during the term of the floating privilege agreement in response to transfer of the asset to a third party.
 12. The computer-program product of claim 4, wherein an additional asset is added to the dynamic pool of assets during the term of the floating privilege agreement.
 13. The computer-program product of claim 12, wherein the additional asset is added to the dynamic pool of assets in response to removing an asset from the dynamic pool of assets wherein obligations relating to the size of the dynamic pool of assets are fulfilled.
 14. The computer-program product of claim 2, wherein the privilege is terminated in response to occurrence of a termination event specified in the floating privilege agreement.
 15. The computer-program product of claim 2, wherein assets transferred under a floating privilege agreement are retained by the first party after expiration of the privilege.
 16. The computer-program product of claim 2, wherein rights to an asset transferred under a floating privilege agreement in the dynamic pool of assets revert to the first party after the floating privilege expires.
 17. The computer-program product of claim 2, wherein the privilege defined in the floating privilege agreement is a privilege for acquiring an interest in assets in a plurality of dynamic pools of assets.
 18. The computer-program product of claim 2, wherein the privilege defined in the floating privilege agreement is a privilege for acquiring an interest in assets in only a single dynamic pool of assets.
 19. The computer-program product of claim 2, wherein the dynamic pool of assets includes assets owned by a plurality of owners.
 20. A computer program product for maintaining a dynamic pool of assets owned by a first party among a portfolio of assets, comprising a permanent and durable computer useable medium having a computer readable program, wherein the computer readable program when executed on a computer causes the computer to: determine if a floating privilege event has occurred; determine if the floating privilege event is a qualified trigger event; facilitate a second party selecting an asset from the dynamic pool of assets if the first party has granted the second party a privilege comprising a right to select an asset from the dynamic pool of assets in response to a qualified trigger event, wherein exercise of the privilege is conditioned upon an occurrence of the qualified trigger event; verify that the selected asset is qualified for execution of the privilege; grant the second party an interest in the selected asset if the selected asset is verified to be qualified for execution of the privilege; and remove the selected asset from the dynamic pool of assets if the second party is granted an interest in the selected asset.
 21. A computer program product comprising a permanent and durable computer useable medium having a computer readable program, wherein the computer readable program when executed on a computer causes the computer to execute a programmed method of extracting value from a dynamic pool of assets owned by a first party among a portfolio of assets, the method comprising: determining if a floating privilege event has occurred; determining if the floating privilege event is a qualified trigger event; facilitating a second party selecting an asset from the dynamic pool of assets if the first party has granted the second party a privilege that comprises a right to select an asset from the dynamic pool of assets in response to a qualified trigger event, wherein exercise of the privilege is conditioned upon an occurrence of the qualified trigger event; verifying that the selected asset is qualified for execution of the privilege; granting the second party an interest in the selected asset if the selected asset is verified to be qualified for execution of the privilege; removing the selected asset from the dynamic pool of assets if the second party is granted an interest in the selected asset, wherein information concerning the dynamic pool of assets is stored in a computer readable memory and in response to removing the selected asset from the dynamic pool of assets, a computer updates the information in the computer readable memory concerning the dynamic pool of assets.
 22. A computer program product comprising a permanent and durable computer useable medium having a computer readable program, wherein the computer readable program when executed on a computer causes the computer to execute a method for extracting value from a dynamic pool of assets, the method comprising: granting a privilege to a second party by a first party, wherein exercise of the privilege is conditioned upon an occurrence of a predetermined event, and wherein the privilege comprises a right to obtain an interest in one or more assets residing in the dynamic pool of assets at the time of exercise; wherein a computer stores information concerning the dynamic pool of assets in a computer readable memory.
 23. A computer program product comprising a permanent and durable computer useable medium having a computer readable program, wherein the computer readable program when executed on a computer causes the computer to execute a method for extracting value from a dynamic pool of assets, the method comprising: granting to a second party by a first party a conditional right to i) obtain an interest in a patent from among a pool of patents in which the first party holds an interest and ii) enforce the patent in a counterclaim suit against a third party that alleges infringement of a third party patent in which the third party holds an interest, wherein exercise of the conditional right is conditioned upon an occurrence of the third party alleging infringement by the second party of the third party patent; recording in a database an indication of the conditional right granted to the second party; and providing to the second party a list of patents from among patents in the pool of patents from which the patent is selected to enforce in the counterclaim suit against the third party, in response to the third party alleging infringement by the second party of the third party patent, based on the indication of the conditional right recorded in the database.
 24. A server comprising: a database, configured to store indexed information describing a plurality of assets; and a processor that executes: a pool creation module; and a pool maintenance module, wherein the pool creation module is configured to automatically create a dynamic pool of assets at time t1 from among the plurality of assets by scanning records of the database for assets suitable for inclusion in the dynamic pool of assets based on attributes of the plurality of assets in the database and a floating privilege agreement between a first party and a second party, the floating privilege agreement having a term and specifying a predetermined event and a type of interest to be conveyed to the second party upon execution of a privilege to obtain an interest in one or more assets residing in the dynamic pool of comprised of assets from the plurality of assets at time t2, wherein the assets residing in the dynamic pool of assets at time t2 may be different from the assets residing in the dynamic pool of assets at time t1 and wherein the pool maintenance module is configured to dynamically remove one or more assets from the dynamic pool of assets based on ineligibility rules defined in the floating privilege agreement and add one or more other assets to the dynamic pool of assets based on eligibility rules defined in the floating privilege agreement. 